`Subject: RE: Apple v. Maxell; IPR No. 2020-00597
`Date: July 9, 2020 at 10:35 AM
`To: Adam Seitz adam.seitz@eriseip.com, Trials Trials@USPTO.GOV
`Cc: FW-CLIENT-Maxell-Apple-Service Maxell-Apple-Service@mayerbrown.com, Siddiqui, Saqib SSiddiqui@mayerbrown.com,
`Barrow, William J. WBarrow@mayerbrown.com, Miranda, Luiz LMiranda@mayerbrown.com, Bonner, Amanda Streff
`ASBonner@mayerbrown.com, Fussell, Tripp JFussell@mayerbrown.com, Bakewell, Clark S. CBakewell@mayerbrown.com,
`Nese, Bryan BNese@mayerbrown.com, Paul Hart paul.hart@eriseIP.com, Jennifer Bailey jennifer.bailey@eriseip.com,
`Chalynda Giles chalynda.giles@eriseip.com, ptab@eriseip.com, Robin Snader robin.snader@eriseip.com, Pluta, Robert G.
`RPluta@mayerbrown.com
`
`Counsel,
`
`A conference is not necessary. Petitioner is authorized to file a Reply of no more than 12-pages limited
`to addressing the Fintiv factors and the Hulu argument regarding Etchells and Casio, which must be
`filed no later than July 20, 2020. When addressing the Finitiv factors, the panel invites Petitioner to
`specifically address Patent Owner’s contention that “there is no substantial difference between Casio
`used [in the Petition] and Sony used in the District Court Action.” Paper 6, 11. In addition, when
`addressing the Finitiv factors, the panel invites Petitioner to address what, if any, material differences
`exist between the facts presented in this case and those presented in the related IPR2020-00203
`matter. Patent Owner is authorized similarly to file a Sur-Reply of no more than 12-pages limited to
`addressing the arguments made in Petitioner’s Reply, which must be filed no later than July 31, 2020.
`Finally, Petitioner’s Reply should refer to this email as authorization for the filing and the email should
`be included as an exhibit.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Adam Seitz <adam.seitz@eriseip.com>
`Sent: Wednesday, July 8, 2020 4:55 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Adam Seitz <adam.seitz@eriseip.com>; FW-CLIENT-Maxell-Apple-Service <Maxell-
`Apple-Service@mayerbrown.com>; Siddiqui, Saqib <SSiddiqui@mayerbrown.com>;
`Barrow, William J. <WBarrow@mayerbrown.com>; Miranda, Luiz
`<LMiranda@mayerbrown.com>; Bonner, Amanda Streff
`<ASBonner@mayerbrown.com>; Fussell, Tripp <JFussell@mayerbrown.com>; Bakewell,
`Clark S. <CBakewell@mayerbrown.com>; Nese, Bryan <BNese@mayerbrown.com>;
`Paul Hart <paul.hart@eriseIP.com>; Jennifer Bailey <jennifer.bailey@eriseip.com>;
`Chalynda Giles <chalynda.giles@eriseip.com>; ptab@eriseip.com; Robin Snader
`<robin.snader@eriseip.com>; Pluta, Robert G. <RPluta@mayerbrown.com>
`Subject: Apple v. Maxell; IPR No. 2020-00597
`To the Board:
`I am writing on behalf of Petitioner Apple Inc. regarding IPR No. 2020-00597. In nine prior
`IPRs between Apple and Maxell, the Board permitted the parties to file 10-page
`
`IPR2020-00597
`Apple EX1056 Page 1
`
`
`
`IPRs between Apple and Maxell, the Board permitted the parties to file 10-page
`replies and sur-replies to the Patent Owner Preliminary Responses (POPRs) addressing
`the Fintiv factors. Apple seeks leave in this IPR to file a reply to Maxell’s POPR
`addressing Fintiv and for Maxell to file a sur-reply as has been permitted previously.
`Maxell does not oppose this portion of Apple’s request.
`Apple also separately requests leave to file an additional two-pages in its reply directed
`towards Maxell’s argument in its POPR relating to the Etchells Declaration (Ex. 1007). In
`its POPR, Maxell advances an argument that the Board’s precedential decision in Hulu
`requires Apple to submit communications from Casio to Etchells to meet its burden
`establishing the Casio reference is prior art. POPR, 38-40. Because Maxell’s argument
`rests on a legal requirement that does not exist within Hulu or elsewhere, Apple could not
`have foreseen this argument when drafting its petition. As such, Apple additionally
`requests two pages in the reply and sur-reply to address this issue. Maxell does not
`oppose this portion of Apple’s request.
`In sum, both parties agree 12-page replies and sur-replies to the POPRs should be
`permitted to address the Fintiv factors and the Hulu argument regarding Etchells and
`Casio.
`The Parties are available for a call with the Board at the following times:
`Thursday, July 9 – Any time
`Monday, July 13 – Afternoon
`Sincerely,
`Adam Seitz
`Erise IP
`Counsel for Petitioner
`
`IPR2020-00597
`Apple EX1056 Page 2
`
`
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